Patent Owner Held Liable For Attorney Fees In Case Brought By Licensee

Evident v. Church & Dwight (Fed. Cir. 2005)

Evident sued Church & Dwight for infringement of its licensed technology covering toothpaste. The patent owner, Peroxydent, was joined to the lawsuit early-on through a counterclaim by Church & Dwight.  After a bench trial, the district court found that the inventors had withheld material references from the PTO with intent to deceive.  As a result, the patent was unenforceable due to inequitable conduct.  This holding was affirmed without opinion. Evident Corp. v. Church & Dwight Co., Inc., 78 Fed. Appx. 113 (Fed. Cir. Oct. 9, 2003). The district court also determined that the case was exceptional and awarded almost $1.3 million to Church & Dwight for attorney fees and expenses.  Evident & Peroxydent were found jointly liable for the fees — these fees are the subject of the appeal.

On appeal, Peroxydent and Evident argue that Evident had no standing to sue in the first place, and thus, that the court did not have jurisdiction to find attorney fees.

In effect, Evident and Peroxydent, being on the losing side of both their own patent infringement claim and an opposing claim for attorney fees, now appear to seek escape from the judgment by arguing that Evident lacked standing in the first place and that the original lawsuit was improperly filed.

The court found that the defendants’ counterclaim that brought Peroxydent into the suit eliminated any standing problem.

Nonetheless, regardless whether Peroxydent was brought into the suit by the accused or the licensee, there is no standing problem. . . . Accordingly, we conclude that Peroxydent’s presence in the litigation as a third-party defendant fully satisfied any standing requirements.

Affirmed